national arbitration forum

 

DECISION

 

Kohler Co. v. JasonDinner.com a/k/a Jason Dinner

Claim Number: FA1104001383441

 

PARTIES

Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, Illinois, USA.  Respondent is Jasondinner.com a/k/a Jason Dinner (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2011; the National Arbitration Forum received payment on April 14, 2011.

 

On April 13, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <kohlerbathtub.net>, <kohlerkitchensink.net>, <kohlershowerfaucet.net> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kohlerbathtub.net, postmaster@kohlerkitchensink.net, and postmaster@kohlershowerfaucet.net.  Also on April 14, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net> domain names are confusingly similar to Complainant’s KOHLER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net> domain names.

 

3.    Respondent registered and used the <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Kohler Co., is a worldwide manufacturer and provider of plumbing fixtures.  Complainant owns the KOHLER mark and uses it in connection with the promotion of its bath tubs, sinks, and faucets, among other things.  Complainant holds numerous trademark registrations for its KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 94,999 issued Jan. 20, 1914). 

 

Respondent, JasonDinner.com a/k/a Jason Dinner, registered the <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net> domain names on August 4, 2010.  The disputed domain names resolve to commercial search engines which display third-party links to websites offering products in direct competition with Complainant in the plumbing and bath fixture business.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant maintains that it has proven its rights in the KOHLER mark.  Previous panels have expressed that a complainant can show rights in a mark through registering with a federal trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Complainant holds numerous trademark registrations for its KOHLER mark with the USPTO (e.g., Reg. No. 94,999 issued Jan. 20, 1914).  Therefore, the Panel concludes that Complainant has established rights in the KOHLER mark through its registration with a trademark authority according to Policy ¶ 4(a)(i).

 

Complainant also argues that Respondent’s disputed domain names are confusingly similar to its KOHLER mark.  The disputed domain names incorporate Complainant’s mark in its entirety and merely differ by adding the descriptive words “bathtub,” “kitchen sink,” and “shower faucet,” and by attaching the generic top-level domain (“gTLD”) “.net.”  The Panel finds that the addition of the descriptive words, which describe Complainant’s plumbing fixtures, does not adequately distinguish the disputed domain name from Complainant’s mark.  See Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”).  The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names.  In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel stated “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”  Here, Complainant has made a prima facie case in support of its allegations.  Respondent’s failure to submit a response to the Complaint may be interpreted as an admission that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will first look to the record to decide whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the disputed domain names.  The WHOIS information identifies Respondent as “JasonDinner.com a/k/a Jason Dinner,” which is not similar to the disputed domain names.  Complainant further argues that Complainant has never authorized or licensed Respondent to use it KOHLER mark within the disputed domain names.  Nothing in the record would provide a basis for finding that Respondent is commonly known by the disputed domain names, therefore, the Panel concludes that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent’s disputed domain names resolve to commercial search engines displaying third-party links which are in direct competition with Complainant’s plumbing fixture business.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the confusingly similar disputed domain names to reroute Internet users to websites in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the disputed domain name disrupts its business.  Internet users intending to buy plumbing and bath fixtures from Complainant may find Respondent’s websites instead.  Internet users may then purchase similar products from a competitor through one of the third-party links.  The Panel finds that such registration and use for the purpose of sending customers to Complainant’s competitors is disruptive and indicates bath faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

The Panel infers that Respondent receives click-through fees from the previously mentioned third-party links.  Respondent maintains commercial search engines under the confusingly similar disputed domain names and features links to products that would be of interest to Complainant’s customers.  Internet users searching online for Complainant may find Respondent’s websites and become confused as to Complainant’s sponsorship of, or affiliation with, the resolving websites and products offered through the featured links.  Respondent attempts to commercially gain from the likelihood of confusion through the receipt of click-through fees.  The Panel finds that registration and use of the disputed domain names for the this purpose constitutes bad faith under Policy ¶ 4(b)(iv). See  Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kohlerbathtub.net>, <kohlerkitchensink.net>, and <kohlershowerfaucet.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 22, 2011

 

 

 

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